Applicant sought to register the mark SEX ROD in the same stylized font as Opposer's famous RED SOX mark for clothing and a wide variety of related products. In objecting to registration of Applicant's mark, Opposer alleged that: (1) Applicant lacked a bona fide intent to use the mark at the time of filing; (2) the SEX ROD mark consisted of immoral and scandalous matter; (3) the mark disparaged Opposer and/or brought it into contempt or disrepute; (4) there was a likelihood of confusion with Opposer's RED SOX marks; and (5) the mark falsely suggested a connection with Opposer. The TTAB sustained the opposition on the grounds that the SEX ROD mark was scandalous and disparaging, and that Applicant lacked a bona fide intent to use the mark in commerce. The TTAB dismissed Opposer's claims of likelihood of confusion and false suggestion of a connection with Opposer.
Brad Francis Sherman ("Applicant") filed an intent-to-use application to register a stylized version of the mark SEX ROD (shown below) for a wide range of clothing and apparel products in Class 25:
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Boston Red Sox Baseball Club Limited Partnership ("Opposer") filed a notice of opposition, alleging prior use and registration of marks that consist of or incorporate the terms RED SOX ("RED SOX Marks"), including the stylized mark shown below in connection with baseball game services and a variety of goods, including clothing:
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As grounds for the opposition, Opposer alleged that: (1) Applicant lacked a bona fide intent to use the mark at the time of filing; (2) the mark consisted of immoral and scandalous matter; (3) the mark disparaged Opposer and/or brought it into contempt or disrepute; (4) there was a likelihood of confusion with Opposer's RED SOX Marks; and (5) the mark falsely suggested a connection with Opposer.
Lack of a Bona Fide Intent to Use
Opposer argued that Applicant's claimed bona fide intent at the time of filing was suspect "on its face" because Applicant was an individual with no relevant experience, training, or business connections of record, and Applicant's application covered a wide array of apparel. Opposer argued that there was nothing in the record to indicate that Applicant had any capacity to conduct a genuine commercial enterprise involving the manufacture and/or distribution of clothing, and that Applicant produced no documents in response to Opposer's discovery requests to suggest that Applicant had a plan for how he might proceed with such a business.
In response, Applicant stated in a declaration that he had conducted an Internet search of websites that allow one to design and sell custom apparel on the web with minimal investment of time and money, and that he intended to use such a website to create and sell apparel with his SEX ROD mark. Applicant also argued in his brief (but failed to present any testimony to the effect) that he was a marketing professional with over five years experience in online marketing, that he was knowledgeable about the speed and ease with which one can launch an online apparel business, and that he could effectively bring the apparel to market "overnight."
The TTAB found that Opposer had satisfied its initial burden of showing the absence of any documentary evidence regarding Applicant's bona fide intention to use the mark given Applicant's failure to submit any evidence, documentary or otherwise, to support his claimed bona fide intent to use the mark when the application was filed. The TTAB noted that Applicant's Internet searches were not conducted until over two years after the filing of his application and after the notice of opposition was amended to assert a claim that Applicant lacked a bona fide intention to use the mark. The TTAB accorded no evidentiary value to Applicant's statements in his brief regarding his asserted marketing experience since they were not of record, and his claims that the clothing could be marketed "essentially overnight" were not credible.
Section 2(a) - Immoral or Scandalous Matter
Opposer argued that SEX ROD comprised matter that would be considered vulgar to a substantial composite of the public when used on T-shirts and other items of apparel, including, in particular, goods intended for children and infants. Opposer submitted dictionary evidence defining the word "rod" as "Slang...b. Vulgar, the penis." In response, Applicant conceded that SEX ROD was intended to possess a sexual connotation, but argued that it was only "sexually suggestive" and described his mark as a parody of the RED SOX stylized mark. According to Applicant, the mark "represents the clever yet sophomoric sense of humor that prevails in venues in which apparel bearing the SEX ROD Stylized mark would likely be worn, e.g., ballparks, sports bars, and university campuses." The TTAB explained that dictionary evidence alone can be sufficient to establish that a term has a vulgar meaning. Further, the TTAB found that as the mark would appear on apparel and be worn in all types of public places, the mark would convey not a sexually suggestive connotation as Applicant contended, but rather a sexually explicit message to the viewer. The TTAB agreed that the use of the mark on children's and infant clothing made it particularly lurid and offensive. Even assuming SEX ROD was a parody of Opposer's RED SOX Marks, the TTAB concluded there was nothing in the parody itself that changed or detracted from the vulgar meaning inherent in the term.
Section 2(a) - Disparagement
To establish disparagement, Opposer was required to prove two elements: (1) that the communication would be understood as referring to the plaintiff, and (2) that the communication would be considered offensive or objectionable by a reasonable person of ordinary sensibilities. Finding that Applicant had copied the form, style, and structure of Opposer's corporate symbol, and that Applicant's mark was so visually similar to the original, the TTAB concluded that many consumers would recognize it as referring to the Red Sox. Because the TTAB found that the mark SEX ROD would be perceived as a vulgar term by a substantial number of consumers, and because Applicant's mark would be understood as referring to Opposer, the TTAB ruled that the mark would be viewed as a sexually vulgar version of the baseball club's symbol and thus constituted disparagement under Section 2(a).
Section 2(d) - Likelihood of Confusion
Although many of the likelihood-of-confusion factors favored Opposer (including trade channels, nature of products, and lack of care exercised in purchase decisions), the TTAB concluded that the marks were too dissimilar to support a finding of likelihood of confusion. Although the fame of Opposer's RED SOX mark extended to the form of the RED SOX wording in the particular stylized display, the fame of the mark did not extend to the stylization alone, apart from the words in the mark. The TTAB explained that the fact that Applicant's mark may call to mind Opposer's mark did not compel a finding of likelihood of confusion.
Section 2(a) - False Suggestion of a Connection
For the same reason that confusion was held unlikely, the TTAB ruled that Applicant's mark was not a close approximation of Opposer's identity. Considering the inherent nature of Applicant's mark, and the fact that the mark was disparaging to Opposer, the TTAB concluded that the public would not reasonably believe that Opposer, a famous and reputable organization, would be associated with Applicant's mark.
In sum, the TTAB sustained the opposition on the grounds that the SEX ROD mark was scandalous and disparaging under Section 2(a) and that Applicant lacked a bona fide intent to use the mark in commerce. The TTAB dismissed the opposition on the ground of likelihood of confusion under Section 2(d) and on the ground that the mark falsely suggested a connection with Opposer under Section 2(a).
A showing that an applicant lacks documentary evidence demonstrating its bona fide intent to use the applied-for mark at the time of filing shifts the burden to the applicant to establish a bona fide intent to use the mark. Once this burden shifts, mere allegations of an intent to use the mark at the time of filing by the applicant without more will not be sufficient to support a claim of a bona fide intent to use.